Abg Juicy Couture, Llc. v. Bella International Ltd t/a Juicy Girl and Others
Read the full judgment text of HCA 1764/2008 on BabelCite. This High Court CFI judgment was delivered on 8 September 2014.
1. The plaintiff is a corporation incorporated in Delaware, USA. It claims against the 1st to 4th defendants for infringement of its registered trademarks and passing-off. This action was initially instituted by a Californian corporation Juicy Couture Inc. (“JCI”). JCI assigned its rights in this action together with other assets and rights to the plaintiff on 6 November 2013. Notice of assignment has been given to the defendants. The plaintiff then took over this action from JCI on 25 November
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HCA 1764/2008 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 1764 OF 2008 ____________
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______________ J U D G M E N T ______________ 1.The plaintiff is a corporation incorporated in Delaware, USA. It claims against the 1st to 4th defendants for infringement of its registered trademarks and passing-off. This action was initially instituted by a Californian corporation Juicy Couture Inc. (“JCI”). JCI assigned its rights in this action together with other assets and rights to the plaintiff on 6 November 2013. Notice of assignment has been given to the defendants. The plaintiff then took over this action from JCI on 25 November 2013. 2.The 1st and 4th defendants are companies incorporated in Hong Kong. The 2nd defendant is the wife of the 3rd defendant. The 2nd and 3rd defendants are the directors of the 1st and 4th defendants. Each of them used to hold 50% of the shares of the 1st defendant. On 30 December 2011, they transferred their respective shareholdings in the 1st defendant to the 4th defendant. The 2nd and 3rd defendants also used to hold 40% and 60% of the shares in the 4th defendant respectively. On 31 December 2011, they transferred their respective shareholdings in the 4th defendant to Juicy Girl Group Ltd, a BVI company. 3.The 1st and 4th defendants are and were corporate vehicles through which the 2nd and 3rd defendants have operated their BELLA Fashion Group (“BELLA”). The 4th defendant has operated a number of outlets in Hong Kong marketing and promoting ladies’ fashion wear bearing the JUICY GIRL trade marks. BACKGROUND 4.Prior to 6 November 2013, JCI used to carry on the business of designing and marketing contemporary casual apparel and fashion accessories primarily for young ladies. The plaintiff claims that JCI had since about 1996 promoted and used in U.S.A. the word marks “JUICY” and “JUICY COUTURE”. These marks were used as word marks and also in a variety of designs and forms. They were used alone or incorporated with some elements of design on JCI’s fashion products and related retail services. The plaintiff further claims that JCI had marketed and promoted the fashion goods under the “JUICY COUTURE” brand as a US brand with emphasis on its origin in Los Angeles and/or California. The business of JCI is being continued by the plaintiff since 6 November 2013. 5.The plaintiff’s trade marks that are registered in Hong Kong and the particulars of registration are as follows:
6.The plaintiff claims that the defendants in selling their ladies fashion wear and accessories under or in the brand name of “JUICY GIRL” have infringed the plaintiff’s trade marks, passed off their retail business as and for that of JCI or the plaintiff or associated with or approved by the plaintiff and passed off their goods as and for the plaintiff’s fashion products. LEGAL PRINCIPLES ON INFRINGEMENT OF TRADE MARKS 7.The plaintiff relies on section 18(3) of the Trade Marks Ordinance, Cap. 559. The section provides:
8.Ms Tam, leading counsel for the plaintiff referred to the principles for discerning similarity as summarized by Kitchin J in Julius Samaan v Tetrosyl Ltd [2006] FSR 4 at [51] which were cited by Deputy Judge H Wong, SC in Guccio Gucci v Cosimo Gucci [2009] 5 HKLRD 28at [79]:
9.Ms Tam also referred to section 7(2) of the ordinance which provides that the likelihood of confusion includes a likelihood of association:
10.Ms Tam further referred to [80 to 82] of the judgment of Guccio Gucci to illustrate different types of association:
11.Ms Tam further submitted that the Court has to assume that the mark has been in use and developed a reputation and goodwill for the entire specification of goods or services. She referred to Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 at [79-80] where Jacob LJ said:
12.On likelihood of confusion, both Ms Tam and the defendants further referred to Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 24 (31 January 2012) where Kitchin LJ said at [87]:
13.Ms Tam also submitted that members of the public may be confused and thus wrongly regard the JUICY GIRL brand as a subsidiary line of the plaintiff. She referred to Guccio Gucci at [92] where Deputy Judge H Wong described the “vertical extension” of a mark:
THE DEFENDANTS’ RELIANCE ON SECTION 19(4) 14.The defendants’ defence is that they had been using the their “JUICY GIRL” trade mark either alone or in conjunction with other trade marks for ladies’ fashion wear in Hong Kong in or about early to mid 1998 through sales in BELLA. They rely on section 19(4) of the Trade Marks Ordinance:
JCI’S ADVERTISEMENTS IN AMERICAN MAGAZINES 15.In addition to relying on the trade marks “JUICY”, “JUICY JEANS” and “JUICY COUTURE” in Class 25 registered on 7 April 2000, the plaintiff also argued that JCI had used its marks in Hong Kong prior to the defendants’ alleged use in or about early to mid 1998. The plaintiff submitted that the use was by way of JCI’s advertisements of garments under its mark in the Seventeen magazine published in the USA in 1996 to 1998 which, because of subscription by public libraries or beauty salons, became available in Hong Kong. The plaintiff relied on the advertisements in the following editions of the Seventeen magazine copies of which are kept in the archive of the HK City Hall Library:
16.The defendants however argued that the plaintiff had not pleaded that JCI had used its marks “Juicy” and “Juicy Couture” in Hong Kong prior to July 2000. Ms Tam in reply relied on para. 8 of its Re-Re-Re-Re-Amended Statement of Claim (“Statement of Claim”) which pleaded that:
17.The plaintiff in fact provided particulars of the alleged use of the marks in support of this averment which are numbered (a) to (h). However, none of the particulars referred to advertisement in any magazine whether published in the US and circulated in Hong Kong or otherwise at any time. 18.I also note that para. 9 of the Statement of Claim pleaded that:
19.From the above, it is clear that the plaintiff had not indicated in its Statement of Claim that it would be relying on the said advertisements published in the various editions of the Seventeen magazine above-mentioned or that the marks had been promoted or used in Hong Kong prior to July 2000. It is thus unfair to require the defendants to deal with this issue at the trial. I therefore hold that the plaintiff is not entitled to rely on the said Seventeen magazines to prove that JCI had used the marks prior to July 2000. SECTION 19(4) AND ADVERTISEMENTS IN AMERICAN MAGAZINES 20.In case I were wrong in the decision on the pleading point, I would also deal with the arguments on the substantive merit of the plaintiff’s attempt to rely on the said Seventeen magazines. 21.The defendants argued that the “use” contemplated in section 19(4) should mean ‘genuine use’ as in the context of revocation proceedings under section 52(2)(a). They disagreed that the placing of advertisements in some foreign fashion/beauty magazines which circulated in Hong Kong because of the subscription of it by a few subscribers can amount to “use” under section 19(4) of the trade marks as may be depicted in the advertisements. 22.I should also mention that Ms Tam could not tell me the extent of circulation of these magazines in Hong Kong except that they are available in the HK City Hall library and some high class beauty salons in Hong Kong. There is also no evidence that JCI had placed the advertisements in the magazines intending to promote or use the trade marks in Hong Kong. JCI’s goods bearing the said trade marks were not available in Hong Kong when these magazines were published and circulated in Hong Kong. 23.Ms Tam disagreed with the defendants’ argument and referred to the judgment of Barma J (as he then was) in Brands Inc Ltd v Kabushiki Kaisha Regal Corp [2007] 2 HKC 110. The learned judge held in that case that importing into or exporting from Hong Kong goods bearing a trade mark would constitute infringement against the trade mark owner’s rights under sections 18(1) and 18(5)(f) of the Ordinance. Such activity however would not constitute genuine use by the owner for the purpose of revocation proceedings under section 52(2)(a). This shows the emphasis of the law in protecting the interest of the trade mark owner so that activities that would not constitute genuine use of the mark if carried out by the owner, may still be regarded as infringing use if carried out by a non-owner. 24.However, the use by an owner for the purpose of maintaining the owner’s rights in the mark and to prevent the registration from being revoked needs to be more substantial. Barma J pointed out in para. 18 of his judgment that what is essential for genuine use is that the mark should have been used by being exposed to third parties (other than the owner or licensees or agents) on a market in Hong Kong for goods of a type in respect of which the mark was registered. The reason being that the mark must be used in such a way as to act as a badge of origin, or a guarantee of the source or origin of the goods to which it affixed. 25.The defendants referred to the judgment of Jacob J (as he then was) in Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 20. In that case, the plaintiff, an American company selling household goods and furniture, owned a registered trade mark of “Crate & Barrel” in the United Kingdom. The defendant ran a single shop in Dublin, Ireland called “Crate & Barrel”, was also selling household goods and furniture. The defendant placed an advertisement in a magazine published in the UK which circulated in the UK and Ireland. At the top of the single full page colour advertisement are the words “Crate & Barrel”. The plaintiff sued the defendant for infringement of trade mark and applied for summary judgment against the defendant. 26.The Trade Marks Act 1994, sections 10(1) and 10(4)(d), which are almost identical to sections 18(1) and 18(5)(g) of our Trade Marks Ordinance, provide:
27.The plaintiff argued that the appearance of the advertisement in the UK was enough to constitute an infringement as defined in sections 10(1) and 10(4)(d). Jacob J said in para. 14:
28.The defendant argued that the advertisement did not constitute “use in the course of trade” in section 10(1). Jacob J granted the defendant leave to defend. The learned judge said in paras. 19 and 20:
29.Ms Tam submitted that in the present case, section 19(4)(a) referred simply to the “date of first use in Hong Kong”. She said when this was read in conjunction with section 19(4)(b), it was clear that the provision was to preserve existing rights by affording a defence to an “earlier user” who could show that he had “got there first”. She further submitted that there was no warrant to superimpose any requirement that such use had to be “genuine” in the sense of preserving an outlet. Hence, she submitted that JCI’s marks had, by the circulation of the said magazines, “got to Hong Kong” sometime in or shortly after April 1996. 30.If Ms Tam’s submissions are correct, the consequence will also be far reaching. Hong Kong is a cosmopolitan city. Numerous foreign newspapers and magazines have circulation here. These newspapers and magazines contain advertisements of numerous kinds of goods of various brands that are not on sale in Hong Kong. The merchants selling these goods may also have no outlet or sales agent here. However, on the strength of Ms Tam’s submissions, the incidental circulation of the advertisements of goods in these foreign newspapers and magazines in Hong Kong will earn the merchants of these goods the rights under section 19(4) of the Ordinance. If this interpretation of section 19(4) is right, it may well hamper business development in Hong Kong as many foreign marks and signs may gain an earlier use right under section 19(4) without intending to acquire it for the reason that they are marks of foreign goods the advertisements of which have already circulated in Hong Kong though the goods have never been available here. Such interpretation does not appeal to a reasonable businessman. 31.I think the “use” of the mark that can make the owner the “earlier user” must be genuine use for the purpose of trade or business. The mark when used should be exposed to third parties (other than the owner’s agents or licensees) on a market in Hong Kong in relation to goods or services that are available in Hong Kong. I agree with the defendants that “use” in section 19(4)(a) should mean genuine use for the purpose of revocation proceedings under section 52(2)(a). The plaintiff therefore cannot rely on JCI’s advertisements in the said magazines as the dates of the use of JCI’s marks in Hong Kong. LEGAL PRINCIPLE ON PASSING-OFF 32.Lord Oliver of Aylmerton has summarized the law of passing off in Reckitt & Colman Products Ltd v Borden Inc. & Ors [1990] RPC 341 at 406, lines 23-43:
THE PLAINTIFF’S PLEADED CASE ON GOODWILL 33.The plaintiff pleaded that a substantial number of members of the public, upon seeing the mark “JUICY” either used alone or in conjunction with some other words or elements of design on fashion products or related retail services, are likely to believe that there is a connection in the course of trade between such products or services with the “JUICY COUTURE” brand and none other. 34.The words, elements of design and associated features of get-up used with the trade marks are the fonts of type, logos and colours referred to above which the plaintiff claimed are highly distinctive of its products and services. They are:
35.The plaintiff also pleaded that JCI had since or about 2001 made substantial and extensive use of the mark shown in Appendix A1 hereto called “the “JUICY Crown” Design” and the variations thereof. Some of the designs and marks used by JCI and the plaintiff are shown in Appendices A1 to A8 hereto. Two of the variations of the “JUICY Crown” Design which the plaintiff alleged that the defendants had infringed are shown in Appendices A3 and A4. 36.The plaintiff also claimed that the “JUICY Crown” Design featuring the “Two Terriers”, the classically styled words “Love P&G” in Old English font, has since its creation been stitched on the inside tag of each item of JCI’s fashion products. The words “Love P&G” had later been changed to “Love G&P” and the word “MADE” had also been changed to “BORN”. 37.The plaintiff also claimed that JCI since the late 1990’s had also made substantial and extensive use of the “JUICY” word mark by incorporating it in slogans and epithets and applying them onto fashion products to indicate their origin in or connection in the course of trade with JCI (or the Plaintiff since 6th November 2013). The slogans and epithets include “CHOOSE JUICY”, “VIVA LA JUICY”, “Life is Juicy”, “BASICALLY JUICY”, “Juicy Couture BABY” and “LET JUICY SHINE”; 38.The plaintiff now operates not less than 80 stores under and by reference to the said marks throughout the world. The marks have at all material times been promoted and used by JCI (and the Plaintiff since 6th November 2013) and/or their licensees/distributors. Their fashion products have also been promoted through the website www.juicycouture.com since about 2005. 39.The Lane Crawford Joyce Group has since Spring of 2002 been marketing the Plaintiff’s fashion products under the aforesaid marks in Hong Kong at the retail stores of Lane Crawford alongside retail stores of other distributors and also free-standing “JUICY COUTURE” shops that were opened in Hong Kong since 2006. 40.JCI’s fashion products bearing the “JUICY GIRL” mark have been sold in Hong Kong since about 2004. 41.The free-standing “JUICY COUTURE” shops in Hong Kong are at:
42.The revenue generated for the years of 2003 to 2007 from the sale of products under and by reference to the said marks in Hong Kong by Lane Crawford in its outlets were:-
43.The advertising/marketing expenditure incurred in Hong Kong was in excess of HK$3,898,000 for the period from December 2006 to March 2007 and in excess of HK$2,331,000 for the period from April 2007 to March 2008. 44.The plaintiff thus claimed that it has a substantial goodwill and reputation in Hong Kong earned through extensive sales and promotion in Hong Kong since 2002. Ms Tam said in her closing submissions that the date for assessing the plaintiff’s goodwill for the passing-off claim should be mid-2007. THE ALLEGED BREACH BY THE DEFENDANTS 45.The plaintiff further pleaded that the defendants had infringed its marks as registered in Hong Kong as referred to above. The plaintiff also pleaded that the defendants had passed-off their retail business as and for that of JCI or the Plaintiff or associated with or licensed by them and/or L. C. Licensing, Inc. The plaintiff also pleaded that the defendants had passed-off their goods as and for the fashion products of JCI or the Plaintiff. 46.The particulars of infringement and passing off relied upon by the plaintiff are the following:-
47.In relation to the aforesaid acts of the defendants, the plaintiff further pleaded that:
48.The plaintiff also pleaded that:-
LIABILITY OF THE 2ND AND 3RD DEFENDANTS AS JOINT TORTFEASORS 49.The plaintiff pleaded that the acts of the 1st and 4th defendants were committed by them pursuant to a common design of the 2nd and 3rd defendants with the intention of deliberately riding on the plaintiff’s or JCI’s goodwill. 50.Ms Tam also submitted that the 2nd and 3rd defendants were at all material times the sole shareholders and directors of the 1st and 4th defendants and were in sole control of the operations of the companies. 51.The 2nd and 3rd defendants have also admitted in their defence that they had at all material times run and operated the business of BELLA through the corporate vehicles of the 1st and 4th defendants. THE DEFENCE OF ANTECEDENT USE OF THE SIGN “JUICY GIRL” 52.The defendants admitted that JCI had carried on business under and by reference to the name and trade mark “JUICY COUTURE”. 53.They said that the nick name of the daughter of the 2nd and 3rd defendants is “Juicy”. This is proved by some video clips of the family of the 2nd and 3rd defendants taken in 1995 to early 1996. 54.They claimed that the 2nd defendant was inspired by his daughter’s nick name “Juicy” to coin the brand name “JUICY GIRL”. They also claimed that the 2nd and 3rd defendants had started using their “JUICY GIRL” trade mark for ladies’ fashion wear in Hong Kong in or about early to mid 1998 through sales in BELLA. They had used the mark either alone or in conjunction with other trade marks. 55.Thereafter, the “JUICY GIRL” name and mark had been continuously used by BELLA and the defendants in Hong Kong on and in relation to ladies’ fashion wear and accessories. Such use by them was prior to the date of first use in Hong Kong by JCI of any of the plaintiff’s trade/service marks and prior to the date of registration in Hong Kong of any of the plaintiff’s trade/service marks. THE PLAINTIFF’S EVIDENCE
56.The plaintiff called JCI’s former Managing Director (International) Mr Samuelson to give evidence on the plaintiff’s registered trade marks in Hong Kong and elsewhere including the USA. Mr Samuelson also produced photographs and printouts from websites showing the plaintiff’s fashion products. He also produced invoices showing the sale of such products to department stores in Hong Kong including Lane Crawford from 2001 onwards. He also produced photographs of some free-standing stores of the plaintiff in various parts of the world and referred to the international sales figures and advertising expenditure for the years from 2003 to 2011. His evidence was unchallenged.
57.The plaintiff’s 2nd witness Ms Gerson is the Manager of Design and Concept Operations of Juicy Couture. She was a concept designer of Juicy Couture since 21 July 2008. 58.She gave evidence on how JCI was set up in Los Angeles by its founders and how the business was developed. She referred to the incorporation of the word mark “JUICY” into slogans some of which have been referred to above. She referred to JCI’s use of the “JUICY Crown Design” and its variations. She also referred to JCI’s use of the various design elements referred to above. 59.She then referred to some US and UK magazines and newspapers in which JCI had advertised the Juicy Couture fashion products. I have already mentioned that a number of issues of the Seventeen magazine published in 1996-1998 containing the advertisements had gone into the archive of the Hong Kong City Hall Library. JCI also advertised Juicy Couture in magazines in languages other than English in other countries in 2005 and 2006. 60.She then referred to the different elements of design in the get-up of Juicy Couture as pleaded in the Statement of Claim which have been referred to above. She also said that JCI initially did not spend much money on advertising and it became famous because many celebrities appeared in TV shows and movies wearing Juicy Couture fashion products. 61.She then referred to the defendants’ fashion products, signs and advertisements and said that the defendants had copied Juicy Couture’s look and feel in:
62.In cross-examination, she agreed that some design elements used by the plaintiff and JCI like the Gothic font style and tartan were also used by some other famous brand names as part of their get-ups. She also agreed that the pink colour used by the plaintiff was not always found in the defendants’ shops and the defendants sometimes used a different pink colour.
63.The plaintiff then called one Ms Yim, the General Manager for Juicy Couture in a company called Imagine X Group of Hong Kong (a subsidiary of Lane Crawford) which is the current exclusive distributor of Juicy Couture in Hong Kong, Macau and the mainland. Ms Yim produced some press clippings of Juicy Couture from 2006 to 2010 and of the defendants’ Juicy Girl from 2007 to 2010. 64.She referred to the JUICY Crown Design and said that the elements that constitute the logo were sometimes used individually and sometimes collectively by JCI. The brand name JUICY COUTURE always appeared. The Crown also appeared in every season. The two terriers and the Gothic or Cloister font were frequently used. 65.She also gave evidence that her employer had incurred advertising expenditure on Juicy Couture fashion products and sponsored clothing for use by magazines in shooting photos. She also said that many consumers were misled into regarding Juicy Girl as a second line of Juicy Couture.
66.The plaintiff’s next witness Ms Pandora Law was the Senior Wholesale Manager of Imagine X. She referred to the purchase orders placed by her employer with JCI and invoices issued by JCI to her employer. They were in connection with the sale of Juicy Couture fashion products to Hong Kong from 2001 and 2008. She testified to the opening of the various free standing Juicy Couture shops in Hong Kong. She also mentioned about the revenue generated to Lane Crawford by the sale of Juicy Couture fashion products and the Lane Crawford’s advertising expenditure for Juicy Couture all as pleaded in the pleadings. She in particular referred to advertising in many newspapers and magazines in Hong Kong from late 2006 to May 2010. 67.She also referred to the various design elements and their variations used by Juicy Couture. They are the JUICY Crown Design, the trade marks presented in Gothic fonts and the pink colour scheme. She also referred to the various slogans of Juicy Couture some of which are referred to above. She also produced photographs of the signages, billboards, posters, escalator panel wraps and planners used by Lane Crawford in the shops of Juicy Couture or other places to promote Juicy Couture in Hong Kong. 68.She also mentioned about various promotional events like private preview or cocktail party in which the fashion products of Juicy Couture were promoted. She also referred to some US TV dramas aired in Hong Kong TV channels which depicted TV celebrities wearing fashion products of Juicy Couture. 69.She then referred to the defendants’ use of the word “Girl” in conjunction with the mark “Juicy”, a crown device, the Gothic or Cloister font and cursive font for “Juicy Girl” or “JG”, the incorporation of “Juicy Girl” into slogans or epithets appearing on products, the use of the pink in pantone 182 with dark brown in pantone 7533 as background and the use of “J” and “JG” as logos in forms that are visually very similar to the mark “J” and “JC” of the plaintiff. She said the defendants’ use of these design elements gave the consumer the false impression that the Juicy Girl products were associated with Juicy Couture. She said the defendants were making a deliberate attempt to ride on the plaintiff’s goodwill. She also referred to the defendants’ Juicy Girl shops opened since 2007 which were likely to be taken as a secondary line of the plaintiff. The pink colour theme, the crown device and the “JC” sign were used in some of the shops. 70.She also referred to the defendants’ the goods sold to an employee of the plaintiff’s former solicitors on 6 March 2008 with sewn-on label, hang-tag, receipt and shopping bags which all had design elements that made them appear to be of or associated with the plaintiff. 71.There was another purchase by the plaintiff’s representative of the defendants’ good on 9 April 2010. The sales memo again showed “Juicy Girl” in cursive font. “Juicy Girl” and “JG” in Cloister fonts and cursive fonts also appeared in the photographs of the defendants’ then products like hang-tags, labels and shopping bags. Many of them were also in light pink colour similar to the plaintiff’s colour scheme. 72.There was another purchase of a lady’s dress on 10 June 2012 from the defendants’ shop in Queensway Plaza by a representative of the plaintiff. The sewn-on label again showed “JG” and “Juicy Girl” in brown colour Cloister fonts. They are very similar to the plaintiff’s “JC” and “Juicy Couture” design elements. The hang-tag also had the same marks in cursive fonts. Ms Law also referred to the defendants’ websites with addresses registered in 2006 as www.juicygirl.us and registered in 2007 as www.juicylicious.us. They showed an association with the USA which was a misrepresentation. 73.Ms Law also referred to the defendants’ Fall/Winter 07/08 catalogue with photographs. She said that the catalogue used “Juicy” and “Juicy Girl”, “JG” in Cloister font, the crown device with “JG” or “Juicy Girl”, the domain name “www.juicygirl.us”, the slogans and the prominent “JG” logos. They are very similar to the plaintiff’s design elements. 74.Ms Law also referred to the defendants’ launching of bus wrap and taxi wrap advertising campaigns shortly after Lane Crawford had done the same in Hong Kong for Juicy Couture.
75.The plaintiff then called three consumer witnesses. The plaintiff located these witnesses because they were acquainted with one Ms Lee of the plaintiff’s solicitors. The first witness Ms Nichola Kung was a solicitor trainee. She first came across the Juicy Couture brand probably at sometime between 2003 and 2005. She had been to various Juicy Couture stores in Hong Kong. She first came across the defendants’ Juicy Girl brand at sometime between 2007 and 2009. At that time, she was under the impression that the Juicy Girl brand was related to the Juicy Couture brand. She explained in oral evidence that she had this impression because both brands both used the word “Juicy”.
76.The next consumer witness Ms Yu was an Assistant Manager of PricewaterhouseCoopers. She said she was familiar with the Juicy Couture brand as she had seen her friends wearing clothing of this brand. She first came across this brand in 2002 or 2003 when she was studying at a high school in the UK. She visited the Juicy Couture shops in Hong Kong in 2006 or 2007. She was aware that the Juicy Couture brand used Gothic font for its brand name. She had heard of her friends referring to products of this brand as “Juicy products” and she would take “Juicy products” to mean products of the Juicy Couture brand. 77.When she first came across the Juicy Girl brand, she thought it was a junior brand of Juicy Couture. She explained in oral evidence that she had this idea because of the word “Juicy” and it was common for famous brands to have sub-brands.
78.The last consumer witness Ms Clara Li is a paralegal. She came across the Juicy Couture brand possibly in mid-2000. She had walked past Juicy Couture stores in Hong Kong. She was familiar with the Juicy Couture brand because she had seen women wearing the velour tracksuits of this brand. She noticed the distinctive word “Juicy” printed on the back of the Juicy Couture tracksuit pants of her friend. She was also aware of the Gothic lettering of the brand name and the slogans of this brand. She had been to a Juicy Couture shop in Hong Kong but had not purchased anything. She had also seen celebrities wearing Juicy Couture clothing and appearing in magazines and television. 79.She had also come across the Juicy Girl shops. When she first saw such a shop, she thought that it was selling a younger line of Juicy Couture. She had this impression because both names had the word “Juicy” and were thus similar. She knew that consumers generally referred to “Juicy Couture” as “Juicy”. She thus assumed that Juicy girl was a younger range of Juicy Couture.
80.The plaintiff also asked the court to consider some dialogues in some internet dialogues purportedly showing the confusion of some consumers on whether Juicy Girl was of or associated with Juicy Couture. There is no indication as to who were the authors of these dialogues or whether these were genuine dialogues. I do not think it safe to place weight on them. I ignore them. THE DEFENDANTS’ EVIDENCE
81.The key witness for the defendants is the 3rd defendant, Mr Suen Lui also known as John Suen. He made two witness statements on 3 September 2012 and 30 October 2013. He said in the first witness statement that after finishing his education in 1993, he joined his father’s business in the wholesale business of Japanese and European fashion items. The 2nd defendant who is now his wife also worked there. 82.In about August 1995, he started his first fashion retail outlet called “MY DAY”. It was in Pak Sha Road, Causeway Bay. It marketed fashion items imported from Japan and Europe. 83.His first daughter, Alice Suen, was born in late 1995. Her nickname is Juicy. He produced a CD containing some video clips of his family life. Some clips show his parents calling his daughter as Juicy. 84.The financial crisis struck Asia in 1997. The Korean won dropped from 1,700KRW per US$1.00 to 800KRW per US$1.00. Mr Suen thought that that was an opportunity to source ladies fashion items from South Korea. He and the 2nd defendant started to import them from South Korea in early 1998. They also ordered their own marks and labels from their mark supplier Hang Fat Industrial Company in Hong Kong to affix on these fashion items. They sent the marks and labels to their agent in South Korea, one Cheung Kong Trading Company (“Cheung Kong”) to replace the original Korean marks, if any, on the fashion items. The items with their marks and labels would then be imported to Hong Kong for sale. 85.One of the labels they used was “Juicy Girl”. This was created by adding the word “Girl” to “Juicy”, their daughter’s nickname. At that time, they had not heard of “Juicy Couture” yet. 86.In order to launch products of their own brands, they also opened their first Bella shop in March 1998 in Russell Street, Causeway Bay. Their Juicy Girl brand of products were sold in this shop together with other brands. They also set up the 4th defendant at that time to operate the business of Bella. 87.They opened the 2nd Bella shop in November 1998 on Carnarvon Road, Tsimshatsui. The shop was changed to Juicy Girl in 2010 and was their 11th Juicy Girl shop. It operated until early 2012. 88.In October 1999, they changed the name of their first retail shop from “MY DAY” to “Bella”. This was the 3rd Bella shop. It operated to February 2005. 89.In November 1999, they opened the 4th Bella shop in D’aguilar Street, Central. It operated until February 2002. 90.In April 2001, they opened another shop called “PEPPO” in Matheson Street, Causeway Bay. A small quantity of Juicy Girl fashion wear was available in this shop. 91.The 5th Bella outlet was opened in December 2001 on Lan Fong Road, Causeway Bay. It operated until October 2008. The 6th Bella outlet was opened in June 2003 in Maritime Square, Tsing Yi Island. It was closed down in December 2004. The 7th Bella shop was opened in October 2003 in an upstairs unit in Hanford Fashion, Nathan Road. The 8th Bella shop was opened in December 2003 also in an upstairs unit in Hang Lung Centre, Causeway Bay. These 7th and 8th Bella shops were changed to the 6th and 7th Juicy Girl shops in March 2009. 92.In March 2004, they opened another shop in Lan Fong Road. It was called “CHANGE”. It was mainly to market Juicy Girl brand of ladies fashion wear. It was closed in February 2007. 93.In October 2004, they opened the 9th Bella shop in Harbour City, Tsimshatsui. It was also closed down in February 2007. 94.In December 2004, they opened the 2nd CHANGE shop at Queensway Plaza, Admiralty. Its was changed to the 5th Juicy Girl in March 2009. It was closed down in October 2011. 95.The 10th Bella shop was opened in April 2005 in Pottinger Street, Central. It was closed down in August 2007. The 11th Bella shop was opened in August 2005 in Kimberley Road. It was closed down in September 2008. The 12th Bella shop was opened in September 2005 at SOGO Department Store, Tsimshatsui. 96.The 13th Bella shop was opened in December 2005 in SOGO Department Store, Causeway Bay. It was changed to the 2nd Juicy Girl shop in about November 2007. 97.The first Juicy Girl shop was opened in Yiu Wah Street, Wanchai in October 2007. That was some ten months after the opening of the first Juicy Couture shop in the IFC Mall in Hong Kong on 14 December 2006. The first Juicy Girl shop operated until October 2009. 98.The 2nd Juicy Girl shop was converted from the 13th Bella shop in SOGO Department Store, Causeway Bay in about November 2007. 99.The 3rd Juicy Girl shop was opened in August 2008 on Kimberly Road. It was closed down in early 2012. 100.The 14th Bella shop was opened in February 2009 in Hysan Avenue. It had only a short term lease and was closed down shortly afterwards. 101.The 4th Juicy Girl shop was opened in Telford Garden, Kowloon Bay in February 2009. I have already referred to the 5th, 6th and 7th Juicy Girl shops all converted from other shops in March 2009. The 8th Juicy Girl shop was opened in August 2009 on Lan Fong Road. The 9th Juicy Girl shop was opened in November 2009 on Hanoi Road. The 10th Juicy Girl shop was opened in Luk Yeung Galleria in Tsuen Wan in June 2010. I have already referred to 11th Juicy Girl shop above which was converted in October 2010 from the 2nd Bella shop on Carnarvon Road. The 12th and last Juicy Girl shop was opened in June 2012 in APM Plaza, Kwan Tong. 102.Save and except the 14th Bella shop in Hysan Avenue which was on a short term lease, all shops opened or given a new name since October 2007 were Juicy Girl shops. Of the twelve Juicy Girl shops, two came into being in 2007, one in 2008, six in 2009, two in 2010 and one in 2012. 103.Mr Suen said that between 1998 to 2006, 25% to 35% of the total turnover was attributed to Juicy Girl brand products. By 2007, more than ½ of the revenue came from these products. The percentage continued to increase. 104.The defendants also registered their Juicylicious.us website in 2007 and marketed the “Juicylicious” brand as well. Mr Suen said that from 2009 onwards, virtually all the defendants’ sales turnover was from the Juicy Girl or Juicylicious brand of products. They had also marketed Juicy Girl footwear since early 2000. 105.The defendants also promoted the Juicy Girl brand by distributing catalogues for Fall/Winter 07/08, Fall/Winter 08/09 and Spring/Summer 09. They also promoted the Bella and Juicy Girl brands by supplying free ladies fashion wear of these brands to some actresses in sponsorship and promotional activities. They also advertised these brands. 106.Regarding the logo of “JG” in Gothic font with a crown sitting on top, Mr Suen said that he had commissioned a design company, Comma Limited (“Comma”) to design a device for him. Comma produced three designs in mid-December 2006. They are shown in Appendices C1 to C3 hereto. Mr Suen considered them too complicated. His in house designer then worked on the design in Appendix C1 and produced the device shown in Appendices B1 to B4. These designs and their variations were used by the defendants. 107.In his 2nd witness statement he produced a lot more documents including airway bills to evidence his importation of fashion products from South Korea since 1998 through his South Korean agent Cheung Kong, evidence of payment to Cheung Kong through Cheung Kong’s agents in South Korea and documents proving that the travels taken by him and the 2nd defendant to South Korea in 1998 and 1999. 108.He also produced some documents showing the defendants’ purchase of labels and marks of the Juicy Girl brand from 1998 to 2005 (C1060-1080 and D Tab 8). There are also documents proving the defendants’ purchases of clothing accessories and shoes under the Juicy Girl mark in 2003 to 2005 (C1191 to 1198). 109.Regarding the figures of turnover, Mr Suen said that prior to 2005, he did not have a system to set apart the turnover of the Juicy Girl brand from other brands despite the substantial sales of this brand. Hence, he could not produce the sales figures of this brand prior to 2005. He however produced a table (C1250) purportedly showing some of the amounts he paid for sourcing Juicy Girl products from South Korea. He also produced some tables showing the defendants’ purchases in 2003 and 2004 (C736 – 952). 110.Mr Suen further said that from 2005 onwards, he had a new computer software which segregated the turnover for different brands. The turnover for 2005 to 2007 for Juicy Girl brand are as follows:
111.Regarding the plaintiff’s complaint that the defendants had used a shade of pink of Pantonte 182 with a brown Pantonte 7533 which was the colour theme used by the plaintiff, Mr Suen explained that he had originally used purple suede as the decoration material in his Juicy Girl shop in Guangzhou and his first few Juicy Girl shops in Hong Kong. The idea of using this material came from his designer Mr Zhou Jianfeng of Yijun Decoration and Design Company in Guangzhou. The suede material however became dusty and dirty easily. He then explored for a new material for his new shops. He considered using polyurethane as it was easy to clean and maintain. He had a friend, one Mr Danny Lai who was a supplier of polyurethane material. Mr Lai told him that there was no polyurethane in purple colour and suggested to him a metallic fuchsia colour. It was similar to the purple colour that he had used. He then used polyurethane of metallic fuchsia colour to decorate his new shops. His use of this material had nothing to do with the plaintiff’s use of the pink colour. 112.He also repeated his denial of copying the plaintiff’s crown device. He produced more drawings of his marks and tags bearing his crown and Juicy Girl designs. He said that the crown design was a common design feature in the fashion industry. He had not asked the design company, Comma or his in house designer to refer to the plaintiff’s crown design in designing his device. He also produced some copy designs of some other fashion brands that also used a crown design (C1848, 1849, 1881-1887 and 1889-1909). 113.Regarding the shooting of product photographs in famous locations in California for use in catalogues, Mr Suen said that this was a common thing to do by fashion brands and his wife indeed wanted their photographer to portray the “California sunshine” in the photographs. 114.The defendants had the idea of shooting photographs in California back in mid-2010. Mr Suen produced an email with a quotation from his photograph production company dated 26 August 2010 (C217) and a bundle of email communication with the production company since mid-2011. The defendants’ catalogue for Spring/Summer 2012 was published in early 2012. But the preparation had started many months before that. Hence, the defendants could not have copied from the plaintiff’s Spring/Summer catalogue 2012. Mr Suen also denied that the use of pink colour in the defendants’ catalogue was to imitate the plaintiff’s pink colour theme but was inspired by the fuchsia colour of the plaintiff’s decoration material used since about late 2008. 115.Regarding the alleged similar designs or patterns with the use of tartan, kisses, two girls, stripes, disco ball, oversized sunglasses, graffiti and “JC looked alike slogans”, Mr Suen denied that the defendants had made use of these elements to pass-off an association with the plaintiff. 116.He said that the defendants’ tartan photo was taken on 23 June 2010 which was well before the plaintiff’s publication of its Fall 2010 Hong Kong Catalogue which featured the tartan. 117.The defendants had also used the “kisses design” in a photo taken on 13 August 2008 and the plaintiff only used the kisses design in its New York store in January 2009. The “two girls” and “stripes” designs were also commonly used. 118.The defendants had also used a disco ball in a photograph in their Fall/Winter 2007/2008 catalogue well before the plaintiff’s Fall/2009 advertising campaign. 119.The defendants also used the floral design in September/October 2010 when they prepared their Spring/Summer 2011 catalogue. The plaintiff only used the floral design in its Spring/Summer 2011 advertising campaign. 120.Regarding the use of velour in making tracksuits, Mr Suen referred to a few other brands that also used this material for tracksuits. 121.For the “JC look alike slogans”, Mr Suen explained that it was natural and normal for a company to adopt some slogans in its advertising campaigns. The defendants used “JG”, the acronym of their Juicy Girl brand as another mark or logo and incorporated it in their advertising slogans. He denied that the defendants had copied the plaintiff’s slogans. 122.Regarding the bus “wrap” advertising campaign, Mr Suen denied that the defendants did it by following the plaintiff. He said he was approached by Buspak Advertising (Hong Kong) Limited in March 2009 and, after discussing the matter with his wife, he took up the bus “wrap”offer to advertise. 123.Regarding the taxi “wrap” advertising campaign, he also denied of following the plaintiff. He said he used this advertising method because it was the cheapest comparing with advertising in the MTR, on buses or trams. He also referred to other means of advertising that he had used like sponsoring a “Juicy Girl” song in a cantopop concert and the sponsoring of the fashion wear of a TV news anchor. 124.The defendants had also organised fashion shows and other events and engaged celebrities to promote the Juicy Girl brand. 125.Mr Suen also referred to the use of fonts. He said the Gothic, old English or Cloister fonts were widely used in the fashion industry. He also produced some printings of other fashion brands that used such fonts in their marks and brand names. 126.In cross-examination, he admitted that prior to March 2003, a customer had asked him at his Russell Street shop on whether he knew that Juicy Couture brand garments (mistakenly referred to as “Juicy Culture” brand) were on sale in the Lane Crawford Shop in Times Square. Russell Street bounds the side of Times Square. But he denied of having walked across the road to Time Square for a look at the Juicy Couture garments. 127.He also admitted that he had instructed solicitors in March 2003 to register “Juicy Girl” as a trade mark, but the application was not allowed by the Registry on the ground that “Juicy Girl” was in conflict with the marks “Juicy couture” and “Juicy Jeans”. But he said he did not know that the Registry was referring to the conflict caused by the word “Juicy”. 128.He also admitted that he first saw a Juicy Couture shop in Las Vegas in 2006.
129.The defendants also called a former sales lady Ms Au Yeung Yau Hing. Ms Au Yeung said she had started working as a saleslady in about 1990. She was in fact shown in one of the photographs of a defendants’ shop produced at the trial. 130.She said in cross-examination that her English witness statement was translated by Mr Suen to her and she signed it afterwards. The translation was not done to her by a clerk of the defendants’ former solicitors and she did not sign the witness statement at the office of those solicitors. Since her witness statement was not made as it was purported to have been made, I ignore it in total. I only refer to her oral evidence. 131.She joined the defendants’ Bella group in early 1999 and worked at the Russell Street shop in Causeway Bay. She also helped out at the Bella shop in Pak Sha Road, Causeway Bay. She had marketed many different brands of garments with some being European brands and some local brands but no American brand. In order to answer customer enquiries, she had asked Mr Suen the country of origin of the brands. Juicy Girl was the main local brand she had marketed. 132.She left the defendants in July 2001 and rejoined them between 2006 to 2007. She then worked at the shops in Pottinger Street, Lan Fong Road and Admiralty. She noticed that the Juicy Girl range of products had widened since she had left in 2001. There were accessories like shoes and belts. She finally left the defendants in May 2011. 133.When she was at the Russell Street shop in 1999, the Juicy Girl garments were selling at several hundred Hong Kong dollars apiece and European garments were selling at over a thousand dollars apiece. Though there was then no computer system to record the sale of individual brands, she could tell which brand was selling better. 134.In the light of what she had purportedly said in her witness statement, I do not think the plaintiff has been surprised by her oral evidence.
135.The next defence witness is Mr Zhou Jianfeng of Guangzhou Yijun Decoration and Design Company Limited (“Yijun”). Mr Zhou confirmed that the English witness statement had not been interpreted to him. He only used a translation software on the internet to translate it. When he was satisfied with the correctness of the statement as translated, he signed it and passed it to a representative of the defendants’ former solicitors at the Guangzhou East Railway Station. Since the witness statement was not made as it purported to have been, I ignore it in total. I just refer to Mr Zhou’s oral evidence. 136.Mr Suen engaged Yijun in late 2006 to design a new retail outlet in Guangzhou. This job was the first job given by Mr Suen to Yijun. The outlet was for marketing fashion wear for ladies between 25 and 35. This intended business of the shop was the only design instruction given by Mr Suen to Mr Zhou. Mr Zhou decided to use a glassy design theme for the outlet. The outlet was formally opened on 1 May 2007 but ceased business later. 137.Mr Suen later asked Mr Zhou to design the first Juicy Girl shop in Yiu Wah Street, Hong Kong. This was Mr Zhou’s first design job in Hong Kong. Mr Suen again did not give him any specific design instruction except that there should not be too many mirrors in the shop. Mr Suen considered the decoration of the Guangzhou shop too hard and wanted the Yiu Wah Street shop to be warmer. Mr Zhou then used pink suede pouches to create a soft look. 138.After the first Juicy Girl shop, Mr Suen engaged Mr Zhou to design and decorate other Juicy Girl shops in Hong Kong. Mr Zhou recalled that the next two Juicy Girl shops were designed in similar style and colour with similar materials as the first one. The 2nd Juicy Girl shop was in Sogo Department Stall and opened in November 2007. 139.In about 2009, when Mr Zhou was asked to design the fourth Juicy Girl shop, Mr Suen suggested to use polyurethane of fuchsia colour as the decoration material for easy cleaning. This material was shiny and its colour was close to the colour of the suede previously used. This material was used for the later Juicy Girl shops too. 140.Mr Zhou had designed more than 10 Juicy Girl shops for the defendants. Some of them were converted from Bella shops. Mr Zhou maintained a uniformed style for all Juicy Girl shops. 141.Mr Zhou also confirmed that the Juicy Girl design used as the name of the Guangzhou shop at the shop front (C456-457), the design of the letters “JG” in Gothic font with a crown sitting on top and the words Juicy Girl in Gothic font underneath (C452, 454, 457, 458 and 462) and the design of the word “juicylicious” (C455, 459 and 461) were all given by Mr Suen to him before he had started with the making of design drawings for the Guangzhou shop. The design of the words “Juicy Girl” (C457, 461, 463 and 465) was also provided by Mr Suen to him. (These designs were used in the Guangzhou shop and other shops in Hong Kong, the websites and catalogues of the defendants and are shown in Appendices B.) 142.The defendants had also used the Juicy Girl sign with a crown in a wholesale Juicy Girl shop that was designed by him (C398). 143.In the light of what Mr Zhou had purportedly said in his witness statement, I do not think the plaintiff has been surprised by his oral evidence.
144.The defendants’ next defence witness is Mr Yi Kai Wen of Global-Tech System. The defendants called him to say that they did not intend to claim falsely in their web sites that their goods had a US origin. 145.Mr Yi used to be one of the operators of Webeye International Ltd. until 2009 when he set up Global Tech. Mr Suen was a customer of Webeye in about 2003/2004. Webeye supplied webcam control systems and IT-related services to the defendants’ five retail outlets. Mr Yi was responsible for providing the services to the defendants. The defendants were still his customer at Global Tech. 146.In about 2006, Mr Suen asked Mr Yi for assistance to register juicygirl.com as the domain name for the defendants’ Juicy Girl brand. Webeye was not in the business of registering domain names. Mr Yi then personally assisted Mr Suen on this matter on a complimentary basis. He did not know how to register a domain name and asked a colleague Ms Alison Law to help. Ms Law later told him that juicygirl.com had been registered by a third party, but juicygirl.us was available. After obtaining Mr Suen’s approval, he asked Ms Law to register juicygirl.us for the defendants. That was done on 2 June 2006. 147.Later on, Mr Suen asked him to register a domain name for the juicylicious brand. He enquired with Mr Suen on whether juicylicious.us was acceptable as this would look consistent with juicygirl.us. After obtaining Mr Suen’s approval, he asked Ms Law to proceed with the registration. This was done on 9 February 2007. 148.Mr Yi also said that Mr Suen had never instructed him to obtain domain names ending with “.us”. His evidence was corroborated by Mr Suen. He also said that Mr Suen had not asked him to locate Ms Law to give evidence and Ms Law had left Global Tech for several years. 149.In cross-examination, Mr Yi confirmed that he had procured the registration of “BellaHongKong.com” for Mr Suen on 6 June 2005. 150.He also said that in 2006 when Mr Suen wanted to register a domain name for juicygirl, he had checked and found endings of domain names like “.org”, “.net”, “.us” and “.uk”, but he did not know what they meant. He thought the simple “.us” was the webspeak for “us” or “ourselves” and suggested it to Mr Suen. He could not recall if he had tried to obtain for Mr Suen the domain names of “juicygirlhongkong” or “juicygirlhk”. 151.He did not know that “.com.hk” was available in 2007. He was only aware of it in 2009. But I note that the statistics of Hong Kong Domain Name Registration Co Ltd show that there were over 90,000 registered domain names ending with “.com.hk” at the beginning of 2005.
152.The evidence of the last witness of the defendants, Mr Lee Kin Kong is not disputed. Mr Lee said that he was the proprietor and manager of Hang Fat Industrial Company (“Hang Fat”) and he set it up in about 1990. Its business was to print trade marks and the making of hang-tags and knitted marks. It began supplying knitted marks and hang-tags to Mr Suen in about 1998. The goods supplied included the hang-tags, principal marks and washing marks for the Juicy Girl brand. 153.Some invoices and receipts issued by Hang Fat to the defendants had been produced. From the documents produced and summarised by the plaintiff in tap 8 of bundle D, the defendants had ordered from Hang Fat the following quantities of Juicy Girl marks, Juicy Girl washing labels and other tags in the years from 1998 to 2005:
154.In the course of his oral evidence, Mr Suen also sought to produce some tables of figures to show the turnover of Juicy Girl brand for the years of 1998 to 2005. I did not admit these tables. The reason being that they had been available for years. Their relevance was obvious. But they were not produced even when Mr Suen made his 2nd witness statement. It was too late to have them admitted in the course of his oral evidence. Their contents also needed to be explained by the accountant who prepared them, but the accountant was not called. Furthermore, the source documents from which the figures in them were obtain were not identified or produced. In order for these tables to be relied on by the defendants, there had to be a large scale discovery of documents which could not be undertaken in the middle of the trial. Such discovery was absolutely necessary as the tables were only presentations of facts contained in the documents. Furthermore, the source documents regarding the manufacture of Juicy Girl brand garments in the mainland had been made the subject of discovery by my order dated 13 August 2013, but no such document had been produced. Hence, I rejected these tables when Mr Suen sought to produce them in the course of his oral evidence. ANALYSES OF THE PLAINTIFF’S EVIDENCE 155.The defendants have not challenged the factual evidence proffered by the plaintiff’s witnesses. They have also not challenged the three consumer witnesses. I however take it that they do not accept that they had copied the logo, marks and get up of the Juicy Couture brand. I also take it that they do not accept that their Juicy Girl logo and marks including the “JG” sign and the get up in their Juicy Girl shops are similar to those of the plaintiff. This is so despite their challenge against the plaintiff for using the Juicy Couture mark on the ground of infringement of their Juicy Girl mark. I accept the plaintiff’s factual evidence but the issues of infringement of trade mark and passing-off are for my decisions. ANALYSES OF THE DEFENDANTS’ EVIDENCE 156.I will deal with the evidence of the short witnesses first before dealing with the evidence of Mr Suen Lui, the defendants’ key witness.
157.I have already excluded Ms Au Yeung’s witness statement. I did so not because of her fault. I will only consider her oral evidence. 158.Ms Au Yeung was a direct and forthcoming witness. Her answers were directed to the questions. She made no attempt to embellish anything she could not recall. 159.She recalled having marketed garments of the Juicy Girl brand and many other local and European brands. She recalled that after she had left the defendants in 2001, the Juicy Girl range of products had widened to include accessories like shoes and belts. 160.There is some slight contradiction in her evidence about the locations for display of local brands and foreign brands. That minor inaccuracy does not affect the overall truthfulness of her evidence. I accept her evidence as true and correct.
161.I have also excluded Mr Zhou’s witness statement through no fault of his. Mr Zhou is also a good and responsive witness. He always tried to answer the questions directly. There is a ring of truth in what he said. His evidence is also supported by the defendants’ photographs. I accept his evidence.
162.I cannot accept that Mr Yi could have been so ignorant as to take “.us” as the webspeak for “us” or “ourselves”. Even if he were unaware of the meaning of the “.us” domain name ending, Ms Law who procured the registration would have told him that it signified a domain name of US origin or domicile. I also do not think that Mr Suen and his wife would have been as ignorant as Mr Yi had portrayed himself to be. I also cannot accept that Mr Yi was only aware of the availability of “com.hk” in 2009 as there were already over 90,000 “com.hk” at the beginning of 2005. I cannot accept that Mr Yi, who was working in a computer related field, could be so ill informed and ignorant. 163.Furthermore, he had already registered a domain name “BellaHongKong.com” for the defendants on 6 June 2005. That was nearly a year before the registration of domain name “juicygirl.us”. If the domain name “juicygirl.com” was unavailable, he could have tried juicygirlhk.com or juicygirlhongkong.com rather than a name ending with “.us”. I reject Mr Yi’s evidence as it is unbelievable. I find that Mr Yi had on the instructions of Mr Suen deliberately procured the domain names juicygirl.us and juicylicious.us for the defendants so that they could pass-off these websites as sites domiciled in the US.
164.Mr Suen is the key witness of the defendants. His wife, the 3rd defendant has not testified. Mr Suen’s evidence covered all aspects of the case. 165.He said the nickname of his eldest daughter is Juicy. This is supported by some family video clips. The plaintiff does not dispute this evidence. The plaintiff also does not dispute that he and the 3rd defendant had imported garments into Hong Kong for sale. There is also no dispute on the evidence of Mr Lee Kin Kong of Hang Fat that the defendants had ordered from Hang Fat marks, labels and tags of various brands including the Juicy Girl brand. The quantities of the marks, labels and tags of the Juicy Girl brand purchased from Hang Fat from 1998 to 2005 have been set out in tap 8 of bundle D and quoted above. 166.I have also accepted the evidence of Ms Au Yeung. I find that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporation) have marketed garments in Hong Kong by retail under the Juicy Girl brand from 1998 and continuously to and after the commencement of this action. 167.However, the evidence available regarding such sale up to but before the revamping of this brand in December 2006 does not show that there was any particular design for this brand name. There is no evidence that the word mark “Juicy Girl” was presented in any artistic style or with any embellishment. There is also no evidence that the word mark bore any similarity or resemblance to the marks and signs in Appendices A hereto. 168.From the evidence of Mr Lee Kin Kong, Ms Au Yeung and Mr Suen himself, it is clear that the defendants were marketing a number of brands including the Juicy Girl brand and some fakes of foreign brands. 169.I cannot tell if all invoices for the defendants’ purchases of marks and labels from Hang Fat had been produced as the purchases took place years ago. The invoices were produced in batches and not all at one go. Hence, I do not want to conclude on the quantity of garments that the defendants had sold under the Juicy Girl brand from the quantities of marks and labels of this brand recorded in the invoices issued by Hang Fat and produced in this trial. The Hang Fat’s invoices do not show that the quantities of marks, labels and tags ordered for the Juicy Girl brand were overwhelming comparing with the other brands. 170.Though I have found that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporation) have been marketing by retail the Juicy Girl brand of fashion garments, I find that some of the turnover figures pleaded for this brand are doubtful. There is no proper documentary support for the turnover figures for 1998 and 1999 at HK$3,549,147.50 and HK$7,068,499.75 respectively. They are just 25% of the total turnovers for the two years. I do not accept Mr Suen’s words that it was a co-incidence that they were 25% of the total annual turnovers. 171.For the turnovers for 2000, 2001 and 2002 at HK$7,987,221, HK$6,725,126 and HK$8,469,698.60 respectively, Mr Suen said that they were based on costs of purchases. He arrived at these figures by deducting the turnovers of all non-Juicy Girl brands from the total turnovers of these years. Regarding the turnovers of the non-Juicy Girl brands, he arrived at them by applying a mark up factor to their costs of purchases. But he did not provide the documentary proof of the costs of purchases. I do not accept his assertion as reliable. I do not find what he said for these three years as more reliable than what he said for 1998 and 1999. 172.For the turnovers for the years of 2003 and 2004 at HK$8,587,004 and HK$11,407,866 respectively, they are again mere assertions and I do not find them reliable. 173.From March 2005, the defendants used a new computer system which recorded the turnover of individual brands. Mr Suen extrapolated from the turnover for March to December 2005 at HK$7,629,952 to the annual turnover for 2005 at HK$9,346,691. This is not far from his pleaded turnover for 2005 at HK$9,537,440. I accept that the turnover of the Juicy Girl brand for 2005 is at about HK$9,346,691. I also accept that the turnovers for 2006 and 2007 are at HK$14,087,542 and HK$36,026,686 as they are based on figures in the computer system. 174.I now move on to the defendants’ knowledge of the Juicy Couture brand. 175.When the customer told Mr Suen at his Russell Street Bella shop that garments of Juicy Couture brand were available at the Lane Crawford shop across the street, that must have aroused his interest and curiosity as a trader in the fashion market if he was hitherto unaware of this brand. That conversation must have taken place before March 2003 as the Russell Street shop ceased operation by then. I find that if Mr Suen was unaware of Juicy Couture hitherto, he would have walked across the street to Lane Crawford to find out what the Juicy Couture garments were like. I reject his evidence that he was indifferent about Juicy Couture. That evidence is unrealistic and unbelievable. 176.His awareness of the Juicy Couture brand would have been heightened in April 2003 when his attempt to register Juicy Girl as a trade mark at the Trade Mark Registry had met with difficulty because of conflict with Juicy Couture and Juicy Jeans. I reject his evidence that he did not read the letters exchanged between his solicitors and the Trade Mark Registry with care, or that he had only paid attention to the word “Girl” and was not aware of the conflict caused by the word “Juicy”. Such evidence is unreasonable. He had a university education in Australia and would have encountered no difficulty in understanding the letters. 177.Mr Suen and his wife had also been to a Juicy Couture shop at Las Vegas though he said he had not gone into it. But his wife had bought a T-shirt from it. He had indeed gone into a Juicy Couture shop in Newport. All these happened in 2006. 178.By then he must have a clear impression of the logo, marks and get up of the Juicy Couture brand. 179.He then engaged Comma to produce different designs for the Juicy Girl logo in December 2006. The designs created are produced in Appendices C1 to C3 and are dated 14 December 2006. The logo design in Appendix C1 depicts a core design of the letters “JG” in Gothic font with a small crown sitting on top and the words “Juicy Girl” at the bottom also in Gothic font. The defendants modified this design to a simpler look by removing the elaborate ornaments from the “JG” core element and added the words “EST 1995” in Gothic font at the bottom as shown in Appendix B1. 180.The Gothic font for “JG” in Appendix B1 is also of the same font type as used by the plaintiff as shown in Appendices A2 to A3 and A5 to A8. The Gothic font for the words “Juicy Girl” at the bottom in Appendix B1 is however of a different font type and not that used by the plaintiff. The defendants then modified the design for these words to that as shown in Appendix B4 by using the same Gothic font type as used by the plaintiff. After this change, the look of the word “Juicy” is almost the same as the word “Juicy” used by the plaintiff in Appendix A2. There is also similarity between the plaintiff’s design in Appendix A3 and the defendants’ modification of a design by Comma as shown in Appendix B2 bearing in mind that consumers do not place the designs side by side for comparison. 181.The use by Comma of the crown design and the Gothic font for the letters “JG” and the words “Juicy Girl” in the logo appeared to be an attempt to pass-off the Juicy Girl brand as associated with the Juicy Couture brand. 182.The defendants have not made any real attempt to secure a responsible person from Comma to testify on what design instructions it had received from the defendants and why it would have used the crown design and the Gothic font. Given the fact that the plaintiff’s logo has a prominent crown design and the plaintiff uses the Gothic font quite liberally for its mark “Juicy Couture”, it was more likely than not that Mr Suen should have instructed Comma to incorporate such design elements in designing the “Juicy Girl” logo. The further modification of a design by Comma to the design in Appendix B2 and the change of the Gothic font type for the words “Juicy Girl” to as shown in Appendix B4 negates all explanations of co-incidence. 183.I find that the defendants in making a new design for the logo and mark of the Juicy Girl brand was trying to pass-off the Juicy Girl brand as an associated brand of Juicy Couture. The defendants also started with the decoration of their first Juicy Girl shop in Guangzhou at the end of 2006. That coincided with their engagement of Comma to design the new Juicy Girl logo. Mr Zhou, the designer of the Guangzhou shop said that all the designs of logo and marks came from Mr Suen. The logo designed by Comma and simplified by the defendants to that as appearing in Appendix B1 was used as the shop logo in the Guangzhou shop (C-452, 454 and C-462). This shop formally opened on 1 May 2007. 184.There was then the 1st Juicy Girl shop in Yiu Wah Street opened in October 2007. From then on up to June 2012, the defendants opened or converted from other shops another 11 Juicy Girl shops. 185.Though I have found that the defendants in using the new design of logo and marks have tried to pass-off the Juicy Girl brand as an associated brand of the Juicy Couture, I do not think the same can be said about all the other elements of get up of the Juicy Girl brand. Regarding the use of the pink colour in the Juicy Girl shops, the plaintiff’s witness, Ms Gerson admitted that the defendants sometimes used a different pink colour. Mr Zhou, the designer of Yijun also explained the change from pink suede to fuchsia colour polyurethane which was occasioned by the change of decoration material. 186.I also find that the shooting of photographs in California for use in catalogues, the use of tartan, kisses, two girls, stripes, disco ball and oversized sunglasses as advertising materials were out of the defendants’ own initiatives. The defendants might have desired to create an American or Californian mood for the Juicy Girl brand. That was in line with their use of “.us” as endings to their two domain names. They were entitled to do so if they did not pass-off as a brand associated with the Juicy Couture brand. I also do not find the defendants’ taxi-wrap and bus-wrap advertising campaigns objectionable as attempts of passing-off as such are common advertising methods. FINDINGS ON LIABILITY
187.I have already held that the plaintiff cannot rely on the circulation of the Seventeen magazine in Hong Kong as the use of its trade marks in Hong Kong. Hence, it can only rely on its trade marks “Juicy”, “Juicy Jeans” and “Juicy Couture” as registered on 7 April 2000. 188.I have found that the 2nd and 3rd defendants and the 1st and 4th defendants (since their incorporations) had marketed garments in Hong Kong by retail under the Juicy Girl brand from 1998 and continuously to and after the commencement of this action. To the extent that the defendants’ use of the Juicy Girl mark might have infringed the plaintiff’s registered trade marks, they can rely on section 19(4) of the ordinance as their defence. 189.Regarding the naming of the shops as Juicy Girl, such shops on the evidence were the source of garments and accessories of the Juicy Girl brand. Since the defendants were entitled to market their goods under the Juicy Girl brand without infringing the plaintiff’s trade marks, they were also entitled to name their shops selling such goods as Juicy Girl without infringing the plaintiff’s service mark of “Juicy Couture” as registered on 6 September 2006 (see para. 2-118 of Kerly’s Law of Trade Marks and Trade Names, 15th edn). 190.Though the defendants were entitled to use the Juicy Girl mark, they were not entitled to use the mark “Juicy” as that was one of the plaintiff’s registered marks. 191.In the light of the above findings, I further find that the defendants have infringed the plaintiff’s registered trade marks in depicting the word “JUICY” in stylized script in the 1st defendant’s product catalogue as pleaded in para. 18(g) of the Statement of Claim.
192.There is no dispute that garments of the Juicy Couture brand were first sold in Hong Kong at the beginning of 2002. The defendants do not dispute and there is also ample evidence to show that the Juicy Grown design and variations, the marks “Juicy” and “Juicy Couture” and the letters “J” and “JC” in Gothic, Old English, Cloister or Cusive fonts and the incorporation of “Juicy” or “Juicy Girl” into slogans or epithets are distinguishing features and get up of the garments and accessories of the Juicy Couture brand. 193.Four Free-standing Juicy Couture shops were also opened in Hong Kong from December 2006 to August 2007. Substantial advertising expenditure had been incurred to promote this brand. Substantial revenue was also generated by the sale of garments and accessories of this brand. There was a leap of turnover from over HK$7,000,000 in 2006 to over HK$85,000,000 in 2007. I also refer to the evidence of the three consumer witnesses which I have accepted. In the light of such evidence, I agree with Ms Tam, leading counsel for the plaintiff that goodwill of the Juicy Couture brand should have been established in Hong Kong by mid-2007. 194.Regarding the defendants’ use of the Juicy Girl mark, there is no evidence of its appearance prior to December 2006. The first time that this mark and its abbreviation “JG” appeared in different forms of design was after the defendants had engaged Comma to revamp the mark in late 2006. 195.I have already observed that the use by Comma of a crown design and the gothic font for “Juicy Girl” and the letters “JG” in their designs appeared to be an attempt to pass-off the Juicy Girl brand as associated with the Juicy Couture brand. I also find that the defendants’ modifications of the Comma design to the designs in Appendices B negated any explanation of co-incidence. I find that the defendants in using the marks and designs in Appendices B were deliberately misleading the public into thinking that the Juicy Girl brand was an associated brand of the Juicy Couture brand. The plaintiff has therefore proved the passing-off claim.
196.It is the plaintiff’s case that the acts of the 1st and 4th defendants were committed by them pursuant to a common design of the 2nd and 3rd defendants with the intention of deliberately riding on the plaintiff’s or JCI’s goodwill. There is no dispute that the 2nd and 3rd defendants were at all material times the sole shareholders and directors of the 1st and 4th defendants and were in sole control of the operations of the companies. The 2nd and 3rd defendants have also admitted in their defence that they had at all material times run and operated the business of BELLA through the corporate vehicles of the 1st and 4th defendants. I therefore find that the four defendants were acting as joint torfeasors and are liable to the plaintiff as such. JUDGMENT 197.I do not propose to enjoin the defendants from infringing the plaintiff’s trade marks registered in Hong Kong as the infringement I have found against them existed only in their catalogues and was very minimal. 198.For the passing-off claim, I give judgment to the plaintiff in the following terms:
Ms Winnie Tam, SC and Mr Ling Chun Wai, instructed by Baker & McKenzie, for the plaintiff The 1st and 4th defendants represented by the 3rd defendant herein The 2nd defendant was not represented and did not appear The 3rd defendant appeared in person Appendix A1
Appendix A2
Appendix A3
Appendix A4
Appendix A5
Appendix A6
Appendix A7
Appendix A8
Appendix B1
Appendiz B2
Appendix B3
Appendix B4
Appendix B5
Appendix B6
Appendix B7
Appendix B8
Appendix B9
Appendix B10
Appendix C1
Appendix C2
Appendix C3
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Cases cited in this judgment
Further hearings and rulings under HCA 1764/2008